What should I do if I receive a formal notice for infringement?
Responding to an infringement notice need to be done carefully. A few useful steps to do so.
Receiving a letter of formal notice stating that your product, work, or brand infringes the rights of a third party and constitutes infringement is a difficult moment to manage. Financial and human investment in a project necessarily causes attachment, and a visceral reaction when it is called into question by a third party claiming to have rights to it.
The first instinct, which is totally human, is to consider that the third party is at fault, and to ignore this letter. This would be a mistake that could worsen the situation.
It is important to react and develop a strategy in a logical way, without letting affect take over.
This article is intended to place yourself in the situation of an entrepreneur or a person acting in good faith. In the event of voluntary copying, the conduct to be followed will of course be different and it is also advisable to contact a lawyer quickly to be adequate.
First, it is necessary to verify that the sender of the demand for infringement is the owner of the rights and that they are indeed counterfeit.
If this is the case, no action should be taken before signing a transaction that frames the relationship between the two parties.
If, on the other hand, the sender does not own rights or if they are not counterfeit, an adequate defense strategy must be implemented.
Nothing should be done until you are certain of the rights that are opposed to you.
This verification is easier when the formal notice is based on trademark, patent or design law, as soon as it will be possible to find the title on which the request was based.
On the other hand, in the case of copyright, the absence of registration creates uncertainty. However, this can be an advantage. Indeed, if the alleged rights holder has not taken care to provide himself with proof of creation, it may be possible to play with doubt in order not to be considered an infringer.
The letter of formal notice must refer to the rights concerned, with the burden of proof belonging to the right holder who considers that he has been infringed.
In all cases, research should be carried out on INPI bases to try to clearly identify the rights concerned (from the company name if you do not have other information, for example).
If the sender of the formal notice does not clearly specify the rights concerned, it will be appropriate to politely refuse the request, in the absence of precision.
If infringement is certain, it is often preferable to negotiate an amicable settlement rather than trying your luck in court.
However, no action should be taken to remedy the breach before a signed transaction is available. Indeed, the two parties thus commit themselves to each other and can stabilize their legal situation. In the absence of a transaction, there is nothing to say that the party with the rights will not be able to sue you even if the infringement has been stopped.
The transaction generally includes:
Once these elements have been fixed and contractualized between the two parties, the commitments must be fulfilled and therefore infringement must be brought to an end.
The end of the breach must be confirmed in writing (by registered letter with acknowledgement of receipt, preferably), so that the date is fixed and you cannot be blamed for trying to save time. Improper execution of the transaction could expose you to a claim for substantial damages, both for prior infringement but also for non-execution of the transaction.
If you feel that the rights of the third party are irrelevant, or if they are not clear enough, you should ensure that you have all the evidence you need to protect yourself in a future litigation.
The judicial initiative must of course be left to the alleged rights holder. There is no need to retaliate preventively if the latter finally decides not to take action.
If it is a question of copyright, proof of the date of creation should be prepared. The subject was addressed in a previous article.
If it is another intellectual property right, do not hesitate to register your trademark, your patents or your designs in order to protect you against future attacks by other third parties. The dates of precedence will of course have to be taken into account, but it is better to have one title than none.
It could also be appropriate to propose a coexistence agreement, especially in terms of trademarks.
In conclusion, defending against a formal notice based on infringement requires securing your exit as much as possible, and providing yourself with evidence in order to be able to secure your position.
Calling a lawyer can help you put a distance between the emotional aspect of such a situation, and assist you in providing a logical, reasoned and rights-friendly response.
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